Tuesday, 7 April 2015

T 0556/11 - In any shape or form

Defining a shape without functional language can be hard

The Examining division had rejected a claim to a vaginal speculum as lacking clarity because its shape was only defined in terms of functional features. The Board of Appeal agrees with this assessment; This claim ought to include further structural features. The argumentation seems almost interchangeable with one for an objection based on a missing essential feature (which would be based on the same Article 84 EPC).

Claim 1 of the main request reads as follows:
"1. Vaginal speculum (1) comprising two spoon blades (3,4) which form a spoon blade assembly and:
- are intended for introduction into the vagina (25);
- are elongated in a longitudinal direction; and
- are located alongside and opposite one another;
the
one spoon blade (4) at one end of the spoon blade assembly being
provided with two bodies (6) which together with said one spoon blade
form a housing part having a U-shaped cross section and other spoon
blade (3) being accommodated between said bodies (6) such that it is
hingeable with respect to the one spoon blade (4), wherein an exterior
of the housing part having the U-shaped cross section (4,6) is shaped
for accommodating said housing part having the U-shaped cross section in
the mouth of the vagina (25) after the spoon blades (3,4) have been
introduced into the vagina (25); and for holding said housing part
having the U-shaped cross section, at least when the spoon blades (3,4)
are in a position in which they have been brought together, in place in
the mouth of the vagina (25) by the ring (50) of the muscle tissue
(30,31) extending around, the mouth of the vagina."

Reasons for the Decision

(...)
3. Main request

3.1
The application as originally filed states that the aim of the vaginal
speculum according to the invention resides, in particular, in its
specially designed shape which allows the speculum to be held in place
in the mouth of the vagina by the muscle tissue around the mouth of the
vagina even when the spoon blades are together (page 3, line 29 to page
4, line 2).

3.2 Claim 1 defines a vaginal speculum comprising, as
structural features, a spoon blade assembly formed by two spoon blades,
one of which is provided with two bodies which, together with said one
spoon blade, form a housing part having a U-shaped cross section, the
other one of the spoon blades being hingeably accommodated between said
bodies.

The housing part of the claimed vaginal speculum is
further defined by functional features. According to these, an exterior
of the housing part having the U-shaped cross section is shaped for
holding said housing part, at least when the spoon blades are in a
position in which they have been brought together, in place in the mouth
of the vagina by the ring of the muscle tissue extending around the
mouth of the vagina. No structural features for achieving the retention
effect are defined.

3.3 Article 84 EPC requires that the claims
define the matter for which protection is sought in a clear and concise
manner and that the claims be supported by the description. Rule 43(1)
EPC specifies that the matter for which protection is sought must be
defined in terms of the technical features of the invention. These
requirements serve the purpose of ensuring that the public is not left
in any doubt as to the subject-matter covered by a claim.

Moreover,
these requirements imply that a claim must be non-ambiguous and
comprehensible for the skilled person, and that a claim must identify
all the essential technical features of the invention, these being the
features which are necessary in order to obtain a desired effect. The
claimed features may be expressed in structural or functional terms, the
latter case applying if, from an objective point of view, the features
cannot otherwise be defined more precisely without unduly restricting
the scope of the claim, and if the functional features provide
instructions which are sufficiently clear for the skilled person to
reduce them to practice without undue burden (T 68/85, OJ EPO 1987, 228,
Reasons 8.4.3). However, an applicant cannot simply define a technical
feature as it wishes. Rather, the objectively more precise form must be
chosen T 68/85, Reasons 8.4.2).

3.4 As indicated above, in claim 1
the shape of the vaginal speculum is not defined structurally, but only
by the effect it may achieve, i.e. of allowing its retention in the
mouth of the vagina.

The description discloses some embodiments of
a vaginal speculum specifically devised so that the speculum may be
retained. In these embodiments, the housing includes, for example, a
tapering surface for engagement of the musculus sphincter ani externus
and/or the musculus bulbocavernosus (original claim 2; page 10, lines
24 to 28; page 14, lines 1 to 6; Figures 2 and 6 to 8), or a
constriction or indentation for engagement of the ring of muscle tissue
(original claim 4; page 11, lines 18 to 24; Figures 3 and 4). Although
the description also indicates that "the housing can be constructed in a
wide variety of ways in order to achieve the retention effect" (page 5,
lines 2 to 5), no specific other shapes than those disclosed may be
envisioned by the skilled person from the application taken as a whole.

In
view of the above, the claimed definition of the shape of the housing
just in terms of the retention effect to be achieved is ambiguous. The
Board considers therefore that the disclosed structural features for
obtaining the desired retention effect are essential for a clear and
unambiguous definition of the invention. In fact, original claims 2 and 4
recite these structural features. Hence, from an objective point of
view, the features of the invention can certainly be defined more
precisely than in current claim 1 without unduly restricting the scope
of protection to which the applicant is justifiably entitled in view of
the application as filed taken as a whole. For these reasons, in the
present case, the aforementioned conditions expressed in decision T
68/85 for defining the essential technical features of the invention
exclusively in terms of functional features are not fulfilled.

3.5
As a consequence, the Board holds that claim 1 of the main request does
not clearly define the subject-matter for which protection is sought,
contrary to Article 84 EPC.

(...)
5. Auxiliary request II

5.1
Claim 1 of this request includes also the structural features recited
in original dependent claim 2. According to these, the housing part
having the U-shaped cross section is "provided with at least one
tapering surface that tapers with respect to the longitudinal direction
of the speculum in a direction of an external part thereof, on which
tapering surface a ring of muscle tissue formed by the musculus
sphincter ani externus and/or the musculus bulbocavernosus acts/engages
when the speculum is in the position in which it has been inserted in
the vagina and is ready for use, such that a compressive force pushing
the speculum into the vagina is exerted on said tapering surface for
holding said housing part having the U-shaped cross section."

These
features clearly specify that the housing has a tapering surface on
which muscles of the vagina (i.e. the musculus sphincter ani externus
and/or the musculus bulbocavernosus) act or engage such that a
compressive force pushing the speculum into the vagina is exerted on the
tapering surface. The tapering surface is moreover defined to taper
with respect to the longitudinal direction of the speculum in a
direction of an external part thereof. Since the compressive force is
defined to push the speculum into the vagina, it is clear that the
"direction of an external part thereof (of the speculum)" is to be
understood to mean the direction towards the outside of the vagina.

The
impugned decision (point 5.4) held that claim 1 should also include,
pursuant to Article 84 EPC, the feature of a recess (18) for engagement
of the musculus bulbocavernosus, since this feature had been disclosed
in combination with the flat tapering section (17); page 10, lines 22 to
28. The Board disagrees. Original claim 2 provides an appropriately
broader definition of the speculum reciting just the tapering surface
(with no recess included), and Figures 6 to 8 exemplify such a
construction (page 14, lines 1 to 6).

5.2 As claim 1 now includes
clear structural features which are essential for obtaining the desired
effect of retaining the vaginal speculum in place in the mouth of the
vagina when the spoon blades are in a position in which they have been
brought together, claim 1 is considered to meet the requirements of
Article 84 EPC.

5.3 Moreover, since claim 1 is fairly based on original claims 1 and 2, the requirements of Article 123(2) EPC are likewise met.

(...)

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T055611.20150220. The whole decision can be found here. The file wrapper can be found here. Photoby B Balajiobtained via Flickr under CC BY 2.0 license (no changes made).